PENDING ISSUES REGARDING CORRECTIONS TO BE MADE DURING INVALIDATION PART
IV

Wei-Ting Chou, Patent
Director, Patent Group I

¡½Master of Agricultural Engineering, National Taiwan
University

¡½Bachelor of Medical Engineering, National Cheng Kung
University

¡@

4.3 Scheme (C):
conditional acceptance:

Introduction: there are
the following two subschemes where a correction petition can
be accepted.

Subscheme A: During the
administrative remedy against an invalidation case, in each
case where a subsequent correction will influence or change
the basis on which the original decision was made (for
example, a correction to a claim in the sentence of the
subject of the formal decision, no matter whether the
invalidation is dismissed or not), the correction will not
be accepted. On the contrary, if the correction will not
influence or change the basis on which the decision was made
(for example, a correction is made to a claim not in the
sentence in the subject of the formal decision and will not
affect the construction of the claim(s) in the sentence),
the correction will be accepted.

Subscheme B: In principle,
it is the same as Subscheme A. However, a subsequent
correction petition can be exceptionally accepted, if, in
the sentence in the original decision in each invalidation
case during an administrative remedy, the invalidation of
each claim is dismissed.

Reasons for Subscheme A

In the new system, claims
can be partially invalidated, and the claims not invalidated
might not be related to the invalidation case (for example,
the patent includes article claims and method claims, but,
in the invalidation case, only the invalidation of the
article claims is requested). Or, if the invalidation
reasons in an earlier invalidation case for the article
claims are completely different from those in a later
invalidation case for the method claims, after an
administrative remedy is filed for the earlier invalidation
case for which a formal decision is made, it will actually
be unnecessary to deny a correction to be made and not
related to the basis on which the formal decision was made,
so as to not only avoid an influence on the basis, but also
attend to the patentee¡¦s right of making the correction.

Reasons for Subscheme B

According to the current
practices, during the administrative remedy against the
decision where the invalidation is dismissed, even if the
correction might affect or change the basis according to
which the decision at issue was made, the correction
petition to be made by the patentee can be exceptionally
accepted. Therefore, to be aligned with the current
practices, the correction petition can be exceptionally
accepted, if the sentence in the subject in the decision is
that the invalidation is fully dismissed

Advantages and
disadvantages

Advantages for Subscheme
A:

1. After a subsequent
correction petition is filed during the administrative
remedy against an invalidation case according to this
subscheme, if the correction is accepted, although the
corrected version to be issued will be different from the
original version according to which the formal decision was
made for the invalidation case during the administrative
remedy, the basis according to which the formal decision was
made is not changed. Therefore, there will not be an
influence on determining whether the formal decision should
be revoked. Thus, the higher authority still can determine
whether the decision should be revoked or not according to
the original claims based on which the decision was made
without the possibility of considering the corrected version
to thus revoke the decision and remand the invalidation
case. Accordingly, the stability of the claims based on
which the formal decision was made for the invalidation case
for which the administrative remedy is filed can be
maintained.

2. If the requester for
the invalidation case submits new evidence according to the
stipulations in Article 33 of the Intellectual Property Case
Adjudication Act during the administrative remedy, so that
different examining opinions than the formal decision are
provided to revoke the decision and thus remand the
invalidation case, the Office, when reexamining this case,
will allow a chance to make a further correction for further
prosecution. Therefore, the benefits to and rights of the
correction petitioner will not be affected.

3. Furthermore, a later
invalidation case can be examined based on a corrected
version, and thus the prosecution therefor will not be
delayed.

Disadvantages for
Subscheme A:

1. The rights of the
patentee to make a correction will be partially limited, so
as to maintain the stability of the basis according to
which the examination for the invalidation case was made
during the administrative remedy.

Advantages for Subscheme
B:

1. In addition to the
advantages for Subscheme A, further rights of and benefits
to the patentee are enhanced. That is, the correction
petition can be also exceptionally accepted, if each
sentence in the subject in the decision is that the
invalidation is dismissed.